Malaysia – Megnaway Enterprise Sdn Bhd v Soon Lian Hoc

The Plaintiff’s claim was base on the Defendant’s infringement of their Copyright and unlawful interference with the Plaintiff’s trade or business.

Brief Facts

Here the Plaintiff was a private limited company carrying on the business of manufacturing and distributing anti car theft system made especially for local made cars under trademark ‘THEF-PRO’, since 1991. Meanwhile the Defendant was the sole proprietor of a business, selling car accessories. The Plaintiff alleged that the Defendant had infringed and was continuing to infringe the Plaintiff’s copyright by distributing, selling, offering or exposing for sale metal components of an anti theft system, sold under the trademark ‘SAFETY-FIRST ANTI-CAR THEFT SYSTEM’, which were reproductions of the whole work or substantial reproductions of the Plaintiff’s artistic work in the drawings of the metal components in Malaysia.

Finding of Facts

During the proceeding, the question on “Subsistence of Copyright” was raised. The learned defense counsel submitted that the Plaintiff had failed to establish that sufficient effort has been expended on the artistic work and so it is not eligible for Copyright according to the law, Section 7 (3)(a) of the Copyright Act 1987 (hereinafter referred as the Act). However, the Plaintiff’s managing director was able to submit that the artistic work (drawings) were completed almost 20 years ago and has expended substantial amount of skill, labor and effort and the artistic work was therefore original.

Another Issued raised here was the Copyright ownership. The Defendant contested that the Plaintiff is not the owner of the copyright, because the Plaintiff’s managing director being the author of the drawings is the first copyright owner. Nevertheless, being the Plaintiff’s managing director cannot be an employee of the Plaintiff, in which the case, the Copyright is not transferred to the Plaintiff but remain vested in the Plaintiff’s managing director. Notwithstanding subsection (6) of Section 27 of the Act, where a work is commissioned by a person who is not the author’s employer under a contract of service; or not having been so commissioned, is made in the course of the author’s employment, the Copyright shall be deemed to be transferred to the person who commissioned the work or the author’s employer (subjecting to any agreement between parties). There is evidence that the Plaintiff’s managing director carries a dual capacity. On one hand, he is the managing director. On the other hand, he is a designer for anti theft system and the artist of the drawings of metal components which make up the anti theft system.

As regards to the unlawful interference with the Plaintiff’s trade or business, the Plaintiff had proved by way of a trap purchase conducted by the Plaintiff’s manager. The Plaintiff obtained evidence that the Defendant was selling, offering for sale and distributing infringing goods.

Held

The Plaintiff’s artistic work came within the ambit and purview of Section 7(3)(a) of the Act; In terms of sufficient effort had been expanded to make the artistic work original in character, and the degree of effort, skill or labour expended was inextricably linked to the originality of the work. It was evident that the Plaintiff’s right covered not only the drawings of the metal components for anti-theft system but it also extended to metal components thereof which the Plaintiff had manufactured, base on the drawings. When comparing the metal components, a substantial part of the Defendant’s metal components were identical and / or substantially similar to the metal components of the Plaintiff.

The fact that the Defendant had sold and was continuing to sell anti-theft system undoubtly, established an infringement of Copyright on the part of the Defendant under Section 13(1)(e) of the Act. The right to distribute the work or any reproduction thereof is vested exclusively on the Copyright owner or its licensee and this right extends to copies or any reproduction of the works.

The Defendant was selling, offering for sale and distributing the anti-theft system, which was infringing the Plaintiff’s copyright, as a result the Defendant had unlawfully interfered with the Plaintiff’s trade. In conjunction with the above, the Plaintiff has succeeded in establishing the claim against the Defendant, base on the infringement of the Plaintiff’s copyright and unlawful interference with the Plaintiff’s trade or business and is entitle to remedies. This was also base on the Plaintiff’s goodwill and reputation, which have been injured by the Defendant’s unscrupulous act, by virtue of Section 36(1) of the Act, Copyright is infringed by any person who does, or cause any other person to do, without the license of the owner of the Copyright, an act of the doing is controlled by Copyright under this Act. In reference to the Act the Defendant had infringed the Plaintiff’s copyright under this Section.

The requirement to established direct infringement was set out in the case of Purefoy Engineering Co Ltd v Sykes Boxall & Co Ltd (1955) 72 RPC 89. The requirements are as follows;

-There must be sufficient objective similarity between the original work or a substantial part thereof, and the infringing copy;

-There must be a causal connection between the original work and the infringing copy, that is, the infringing copy must have been copied from the original work, whether directly or indirectly; and

-What has been infringed must constitute a substantial part of the original work.

Opinion

In my opinion, reference is made to the above matter, although the Law on Copyright in Malaysia is not precise, as Copyright exists automatically upon creation of work. There are no definite and actual processes to register a Copyright in Malaysia. But by way of considering case laws and facts; the law on Copyright still remain just and fair protecting the innocent or injured party. There could be infringement even though the imitation is not an exact replica. It does not matter the size or whether the whole or part of the original was copied. Therefore in Malaysia, in order for a work to be protected under the laws of Copyright, it is essential to execute a Statutory Declaration to assert ownership of a Copyrighted work.